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IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
European Union - Appellant
Versus
Union of India - Respondent
W.P.(C)-IPD 5 of 2022 and W.P.(C)-IPD 6 of 2022
Decided On : 31-05-2022
Important Points
Subject
Intellectual Property - Patent Law
Headnote
(B) The Court recognized that the deadlines under Section 21 and associated Rules are mandatory, but extraordinary circumstances could allow for judicial intervention in cases of non-compliance due to lack of communication or diligence by patent agents.
(C) Strict adherence to prescribed timelines governs the patent application process; however, the Court is inclined to restore applications where intent to abandon is absent and the applicant demonstrated diligence.
(D) The application needing restoration clearly followed through steps necessary for prosecution, but faced abandonment due to negligence of the first patent agent, not the applicant. (E)
Result: Writ petitions allowed; orders treating applications as abandoned set aside, and applications restored for examination.
| Table of Content |
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| 1. petitioner's patent applications were deemed abandoned due to procedural issues. (Para 2 , 3 , 4 , 5 , 6 , 7 , 8 , 9 , 10) |
| 2. petitioner argues the controller lacks power to condone delay; courts can correct procedural app errors. (Para 11 , 12 , 13 , 14) |
| 3. court reviews the mandatory and non-extendable deadlines in patent application processes. (Para 15 , 16 , 17 , 18 , 19 , 20 , 21 , 22 , 23) |
| 4. legal cases affirm that abandonment requires a conscious act, not mere procedural lapses. (Para 30 , 31 , 32 , 33 , 34 , 35 , 36) |
| 5. court emphasizes the importance of intention in abandonment cases, restoring applic evidence. (Para 49 , 50 , 51 , 52 , 53 , 54 , 55 , 56 , 57) |
JUDGMENT
Prathiba M. Singh, J. (Oral)--This hearing has been done through hybrid mode.
2. These two writ petitions, W.P.(C)-IPD-5-2022 & W.P.(C)-IPD-6-2022 have been filed by the Petitioner-the European Union, represented by the European Commission located at Brussels, Belgium. The Petitioner is seeking setting aside of orders dated 21st January, 2019 and 30th September, 2019, passed by the Controller General of Patents. Vide the said orders, two patent applications bearing nos. 11123/DELNP/2012 and 3466/DELNP/2013, filed by the Petitioner have been treated as `deemed to have been abandoned' under Section 21(1) of the Patents Act, 1970 (hereinafter, `the Act').
Brief Chronology of events in W.P.(C)-IPD-5-2022
3. The Petitioner filed Indian application no. 11123/DELNP/2012 on 21st December, 2012 through its Indian patent agent, Mr. Guruswamy Nataraj (hereinafter, ` first patent agent'). The said application was titled `Method of Providing an Authenticable Time-and-Location Indication', the bibliographic details of which are set out below:
| Priority Application No. | EP 10166025.6 |
| Earliest Priority Date | 15/06/2010 |
| PCT International Application No. | PCT/EP2011/058989 |
| PCT International Filing Date | 31/05/2011 |
| Indian Patent Application No. | 11123/DELNP/2012 |
| Indian Filing Date | 21/12/2012 |
| Request for Examination Filed | 7/10/2013 |
| FER issued | 10/4/2018 |
| Dates of follow up emails written by the Applicant's international attorneys to the Indian patent agent | 16/11/2018, 23/08/2018, 26/07/2018, 28/05/2018, 18/05/2018, 26/04/2018, 28/03/2018 |
| Date of order holding the application `deemed to be abandoned' | 21/1/2019 |
| Date of engaging fresh attorneys | February, 2019 |
| Date of filing of Reply to the FER along with a representation seeking hearing in the application | 29/4/2019 |
| Term of the Patent if granted | 30/5/2031 |
Brief Chronology of events in W.P.(C)-IPD-6-2022
4. The Petitioner filed application no. 3466/DELNP/2013 on 18th April, 2013 through the same patent agent mentioned above. The said application was titled `Apparatus and Method', the bibliographic details of which are set out below:
| Priority Application No. | GB 1016079.4 |
| Earliest Priority Date | 24/09/2010 |
| PCT International Application No. | PCT/EP2011/066478 |
| PCT International Filing Date | 22/09/2011 |
| Indian Patent Application No. | 3466/DELNP/2013 |
| Indian Filing Date | 18/04/2013 |
| Request for Examination Filed | 7/10/2013 |
| FER Issued | 29/6/2018 |
| Dates of follow up emails written by the Applicant's international attorneys to the Indian patent agent | 16/11/2018, 18/10/2018, 21/09/2018, 23/08/2018, 26/07/2018, 28/05/2018, 18/05/2018, 26/04/2018, 28/03/2018 |
| Date of order holding the application as `deemed to be abandoned' | 30/9/2019 |
| Date of engaging fresh attorneys | March, 2019 |
| Date of filing of Reply to the FER | 29/4/2019 |
| Term of the Patent if granted | 21/9/2031 |
5. The Petitioner, through the initially engaged European Law Firm, M/s FREYLINGE had engaged the first patent agent to file and prosecute the Indian national phase applications of their Patent Cooperation Treaty (hereinafter, `PCT') applications before the Indian patent office.
6. Thereafter, the responsibility of processing, prosecution, maintaining and coordination of these applications were moved by the Petitioner to another European firm namely, M/s GEVERS in June 2017. Emails were exchanged between the first patent agent
